WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. wangwei, gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng

Case No. D2014-0714

1. The Parties

The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondents are:

Wangwei of Xiamen, Fujian, China; gaohaolvshishiwusuo/shaoxiaogen of Beijing, China; wang tian of Xiamen, China; ni maiwo of Xiamen, China; and fangjincheng of Xiamen, China.

2. The Domain Names and Registrars

The disputed domain names are <yahooclassicgames.com>, <yahoocommercecentral.com>, <yahoogamesnetwork.com>, <yahoogemini.com>, <yahoonewsdigest.com> and <yahoovip.com> ("the Disputed Domain Names").

<yahoocommercecentral.com> is registered with Guangdong JinWanBang Technology Investment Co., Ltd. <yahoovip.com> is registered with eName Technology Co., Ltd. The rest are registered with Xin Net Technology Corp. The registrars are hereinafter referred to collectively as the "Registrar".

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 1, 2014 in relation to the Disputed Domain Names <yahoovip.com> and <yahoocommercecentral.com>. On May 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 6, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent gaohaolvshishiwusuo, shaoxiaogen is the registrant of <yahoovip.com> and confirming the registrant information is the same with the named Respondent in the Complaint. On May 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent wangwei is the registrant of <yahoocommercecentral.com> and confirming the registrant information in the Complaint.

On May 7 and 23, 2014, the Center transmitted an email in both English and Chinese to the parties regarding the language of the proceeding. On May 8 and 23, 2014, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding within the specified due date.

On May 14, 2014, the Complainant filed an amended Complaint with the Center adding the Disputed Domain Names <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com>. On May 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents wang tian is the registrant of <yahooclassicgames.com> and <yahoogamesnetwork.com>, ni maiwo is the registrant of <yahoogemini.com> and fangjincheng is the registrant of <yahoonewsdigest.com>, and disclosing registrant information which is the same with the named Respondents in the Complaint.

The Center verified that the amended Complaint and the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint in both English and Chinese, and the proceedings commenced on May 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on June 20, 2014.

The Center appointed Kar Liang Soh as the sole panelist in this matter on July 4, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On August 4, 2014, the Panel issued Procedural Order No. 1 to provide an opportunity to supplement the amended Complaint with a copy of Annex Q referred therein but was omitted when the amended Complaint was filed on May 14, 2014. The Respondents were also given an opportunity to comment on Annex Q. No comments were received from the Respondents.

4. Factual Background

The Complainant has been using the mark YAHOO! as well as domain name <yahoo.com> since 1994. The Complainant's business under the mark YAHOO! include providing web directory and search services, email, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, web-store hosting and management. The Complainant's main website under the domain name <yahoo.com> receives almost 200 million unique visitors

The Complainant has achieved very high rankings in studies and surveys from various sources including being ranked among the top 100 global brands in BRANDZ Top 100 Most Powerful Brands in 2008 and 2009, achieving the title of "most trusted technology company in the world" by the Edelman Trust Barometer in 2010, and being ranked number 2 on the list of 100 Most Loved Companies in a study by APCO.

The Complainant owns numerous trademark registrations for the mark YAHOO! around the world, including:

The mark YAHOO! appears to be a popular target of cybersquatting. The Complainant has previously filed many complaints under the Policy targeted at domain names which incorporate the word "yahoo".

The Disputed Domain Names were registered on or after September 10, 2012, two days after the Complainant announced the launch of its YAHOO! Commerce Central service. The Respondents registered the Disputed Domain Names <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> between January and March 2014. As of May 13, 2014, none of the Disputed Domain Names appear to resolve to any website.

There is very little information about the Respondents beyond the WhoIs records of the Disputed Domain Names. At the time of the amended Complaint, the WhoIs records of <yahoocommercecentral.com>, <yahoovip.com> and <yahoonewsdigest.com> referred to the same registrant email address. Similarly, the WhoIs records of <yahooclassicgames.com>, <yahoogamesnetwork.com> and <yahoogemini.com> referred to the same registrant email address. In addition, the registrant of <yahoogemini.com> is reflected as "ni maiwo". The registrant email address for <yahoocommercecentral.com>, <yahoovip.com> and <yahoonewsdigest.com> starts with exactly the same letters "nimaiwo".

During negotiations between September and October 2013 for transfer of <yahoocommercecentral.com> to the Complainant in exchange for reimbursement of registration expenses, the Respondents disclosed <yahoovip.com> as part of a counter-offer to transfer both <yahoocommercecentral.com> and <yahoovip.com> for payment of website construction costs. The content of an email from the Respondents during this exchange is reproduced verbatim below:

"100 yuan? It seems that you are not sincere. I very much hope that the peaceful settlement of this matter. But you do not have faith. I understand that you would pay $ 1,500 arbitration costs of arbitration. Well, I take a step back. 800 dollars. This is my lowest You arbitration will pay 1350-1500 dollars. And a waste of a very long time. I just 800 dollars. Save time and save money. Giving priority to efficiency. What do you think? And we also guaranteed not registered YHOO trademark domain name. I think this is the best solution. Thank you".

After the filing of the Complaint, by an email on May 2, 2014, the Respondents notified the Complainant of <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> which were included in the amended Complaint subsequently. In that email, the Respondents offered to transfer all the Disputed Domain Names to the Complainant for USD1, 000.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Names are confusingly similar to the Complainant's YAHOO! mark. They incorporate the YAHOO! mark in its entirety and merely added generic or descriptive terms, namely, "commerce central", "vip", "classic games", "games center", "Gemini" and "news digest", which are not sufficient to distinguish the YAHOO! mark. The omission of the exclamation point of the YAHOO! mark in the Disputed Domain Names is irrelevant. Exclamation points are not permitted in domain names. Punctuation such as exclamation points is routinely discounted when comparing domain names for confusing similarity with trademarks;

2) The Respondents have no right or legitimate interest in the Disputed Domain Names. The Respondents are not commonly known by the Disputed Domain Names. The Complainant has not authorized the Respondents to use the YAHOO! mark. The Respondents have not used the Disputed Domain Names in connection with bona fide offering of goods or services; and

3) The Disputed Domain Names were registered and used in bad faith. The YAHOO! mark is a famous mark. The Respondents have used the Disputed Domain Names to capitalize on consumers' familiarity with the Complainant's YAHOO! mark. The Respondents registered the Disputed Domain Names <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> between January and March 2014 after the Complainant and Respondents had been negotiating the transfer of <yahoocommercecenter.com> and <yahoovip.com> a few months earlier, and then offered to transfer all six Disputed Domain Names. The Respondents have demonstrated a pattern of bad faith use and registration. The Respondents registered the Disputed Domain Names with the intention of passively holding them.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of Proceeding

The registration agreements for the Disputed Domain Names are in Chinese. The default language of the proceeding is accordingly Chinese. The Complainant has requested for English to the language of the proceeding. Having considered the evidence, the Panel determines that the language of this proceeding shall be English. In coming to this decision, the following factors were taken into consideration:

1) The evidence shows that the Respondents have a working knowledge of English. In the email exchanges between the Complainant and the Respondents, the Respondents communicated in intelligible and clear English;

2) The Respondents did not file any response and have chosen not to participate in the proceedings;

3) The Complaint has been filed in English without any protest from the Respondent;

4) The Complainant is a US-based company that conducts its daily operations in English. Requiring the Complainant to conduct the proceeding in Chinese will lead to unnecessary hardship on the Complainant. The Complainant has asserted that it would be cumbersome and to its disadvantage; and

5) Requiring the Complainant to translate the Complaint into Chinese and conduct the proceedings in Chinese does not offer any procedural or administrative benefit to the proceedings but will likely lead to delay in the proceedings and unnecessary inconvenience to the Complainant.

6.2. Consolidation of Proceeding

The Panel is empowered to consolidate multiple domain names in a single complaint on under paragraph 3(c) of the Rules on the basis that the domain names are registered by the same domain name holder. Previous UDRP panels have clarified that paragraph 3(c) extends to consolidation of domain names registered by the same person using different fictitious names or aliases (e.g., Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Amazon.com, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com's WHOIS Database is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635). Even where domain names are associated with differently named registrants on the face, particular circumstances of a case could indicate that the exercise of common control over the domain names and warrant consolidation (e.g., C&J Clark International Limited v. Lin Lin, Lin Chang, WIPO Case No. D2014-0214).

The Complainant contended that the Respondents of all the Disputed Domain Names are the same individual. The Panel notes the following in the evidence:

1) The WhoIs records of <yahoocommercecentral.com>, <yahoovip.com> and <yahoonewsdigest.com> refer to the same registrant email address;

2) The WhoIs records of <yahooclassicgames.com>, <yahoogamesnetwork.com> and <yahoogemini.com> referred to the same registrant email address;

3) The registrant of <yahoogemini.com> is reflected as "ni maiwo". The registrant email address for <yahoocommercecentral.com>, <yahoovip.com> and <yahoonewsdigest.com> starts with exactly the same letters "nimaiwo";

4) The Disputed Domain Names <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> are registered with the same Registrar;

5) The Respondents negotiated with the Complainant initially in relation to the transfer <yahoocommercecentral.com>, then additionally <yahoovip.com>, and finally all Disputed Domain Names. The Respondents clearly gave the impression that it is the de facto registrant of or has control over all the Disputed Domain Names to be in a position to transfer them;

6) The Respondents did not deny or respond to the Complainant's clear allegation that the Disputed Domain Names were registered by the same person.

In view of the above, the Panel finds that a prima facie case that the Disputed Domain Names are held by the same person and holds that the Disputed Domain Names <yahooclassicgames.com>, <yahoocommercecentral.com>, <yahoogamesnetwork.com>, <yahoogemini.com>, <yahoonewsdigest.com> and <yahoovip.com>shall be consolidated under this proceeding in accordance with paragraph 3(c).

6.3. Discussion

To succeed in this proceeding, the Complainant must show that the circumstances fall within paragraph 4a) of the Policy, namely:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the weight of evidence submitted, the Panel accepts that the Complainant owns trademark rights in the trademark YAHOO! and trade name YAHOO. It is readily apparent to any reasonable person that all the Disputed Domain Names incorporate the trade name YAHOO. All the Disputed Domain Names also incorporate the trademark YAHOO! minus the exclamation point. The Panel accepts that the omission of the exclamation point in the Disputed Domain Names is inconsequential when comparing them with the trademark YAHOO!. Firstly, the exclamation point character is an invalid character in domain names and cannot be used as part of a domain name. Secondly, the most striking and prominent feature of the trademark YAHOO! is the word YAHOO which has been incorporated entirely in the Disputed Domain Names. Thirdly, the Panel's view is echoed by many previous decisions on the same point regarding the trademark YAHOO! (e.g., Yahoo! Inc v. Scott McVey, WIPO Case No. D2011-1486; Yahoo! Inc v. Jesper Hansen, WIPO Case No. D2011-2227; Yahoo! Inc v. Blue Q Ltd, et al, WIPO Case No. D2011-0702).

Putting aside the exclamation point, the only difference between the Disputed Domain Names and the trademark YAHOO! are descriptive or generic suffixes as follows:

It is a consensus view of previous UDRP panels that the addition of descriptive terms to a domain name incorporating a trademark is generally insufficient to prevent confusion between the domain name and the trademark. The Panel does not note any special circumstance which warrants not upholding the consensus view. The trademark YAHOO! is highly recognizable within each of the Disputed Domain Names. The Panel therefore finds each of the Disputed Domain Names to be confusingly similar to the Complainant's trademark YAHOO!.

B. Rights or Legitimate Interests

There is no evidence in the proceeding which suggests that the Respondents are commonly known by the Disputed Domain Names. On the contrary, significant evidence has been presented associating the trademark YAHOO! and trade name YAHOO with the Complainant. The Complainant has also alleged that the Respondents have not been authorized to use the trademark YAHOO! There is also no evidence in the proceeding which could indicate that the Respondent has used the Disputed Domain Names in connection with any bona fide offering of goods or services, or that the Respondents have used the Disputed Domain Names in any legitimate undertaking. Accordingly, the Panel is satisfied that a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Names has been established.

C. Registered and Used in Bad Faith

The Panel accepts that the trademark YAHOO! is a famous mark on the basis of the evidence submitted. It is inconceivable that the Respondents were unaware of the trademark YAHOO! when the Respondents registered the Disputed Domain Names.

Paragraph 4(b)(i) of the Policy identifies the following example of bad faith registration and use of a domain name:

"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".

Pursuant to the negotiations to transfer <yahoocommercecentral.com> and <yahoovip.com> in late 2013, the Respondents clearly knew of the Complainant's interest in acquiring domain names incorporating its trademark YAHOO!. The registration of <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> very shortly after in early 2014 by the Respondents must in all likelihood have been motivated by the intention to capitalize on the Complainant's interest by increasing the stakes. It would seem to the Panel that the Respondents wasted little time to revive the negotiations with the Complainants by offering <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> for transfer to the Complainant shortly thereafter together with <yahoocommercecentral.com> and <yahoovip.com> for USD1,000.

These circumstances lead the Panel to the inescapable conclusion that the Respondents must have registered the Disputed Domain Names <yahooclassicgames.com>, <yahoogamesnetwork.com>, <yahoogemini.com> and <yahoonewsdigest.com> for the purpose of transferring them to the Complainant. In fact, the circumstances raise a strong suggestion that the Respondents' earlier registration of <yahoocommercecentral.com> and <yahoovip.com> must have been for the same purpose. When the Complainant first approached the Respondents to transfer of <yahoocommercecentral.com>, that purpose became realized. The Respondents quickly offered to transfer <yahoovip.com> as well for a bundled price which was subsequently scaled back to USD800. Regardless of whether it was USD800 for two domain names or USD1, 000 for 6 domain names, the Panel finds the consideration for transfer not commensurate with the foreseeable out-of-pocket costs incurred to register the Disputed Domain Names.

In view of the Respondents failure to respond to the allegations of the Complainant, the Panel draws an adverse inference that the Respondents are not able to refute the same. Having considered the evidence presented, the Panel agrees with the Complainant that the Respondents have demonstrated a pattern of bad faith use and registration of the form exemplified by paragraph 4(b)(ii) of the Policy. The Panel holds that the Complainant has shown that the Respondents have registered and are using all the Disputed Domain Names in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <yahooclassicgames.com>, <yahoocommercecentral.com>, <yahoogamesnetwork.com>, <yahoogemini.com>, <yahoonewsdigest.com> and <yahoovip.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: August 12, 2014